The issue is in the actual name being a trademark, however, trademarks are not worlwide UNLESS they have been registered in all regions as such.
If you are in the USA, and the trademark is in the USA, then you have got a problem, if the trademark is in the UK and you are in the USA, for instance, then I do not see much of a problem.
At the end of the day, they have to prove you are in breach of their trademark (quite easy if it is the name and same area), they will probably try and use WIPO Arbitration and Mediation Service to get the ball rolling.
in my years of domaining I've had two c/d letters from famous registered companies. Anyways, make sure its the company that is interested in the name and not someone has trying to pull a fast one. If its TM then drop it but check first.
Do you know why the United States Trademark Office grants multiple registrations to different registrants for the same term ?
Because using the SAME Mark for a different good or service is NOT ILLEGAL !!!
Yahoo! for example has no legitimate right to claim the Yahoo.tel use is an infringement if it is being used for a different good or service class.
UNLESS Yahoo! can prove that the domain was registered in bad faith, that is, with the sole intent of diverting or harming the good or service that Yahoo! is currently registered for, they have NO LEGITIMATE CLAIM to the Domain Name.
I can use Yahoo! for baby diapers and the United States Trademark Office will grant the use and register the Mark if Yahoo! does not show opposition during the registration process.
Unless Yahoo! is granted registration "for EVERY good and service class in the book", which would never happen anyway, they have NO CASE.
THE ARROGANCE of those using a Trademark or Servicemark as if they are the only human beings on the face of the earth with the right is simply RIDICULOUS !
CONGRATULATIONS TO ANYONE who got a "Trademark" after the sunrise period. As long as you have no intent to use it in competition for the same good or service, you are within your rights !
Of course, the "KANGAROO COURT" that the Domain Name Resolution Forum is, you will have to fight for it often times, and may even lose !
It's not like they're after the truth or your rights, the Resolution team resides in America, home of profit over rights and truth, so GOOD LUCK !
If Yahoo! has enough money and influence, truth and rights will disappear for EVERY OTHER ENTITY ON THE EARTH !
thats interesting, love to know how this works, as the owner of a couple of t/m .tels. i guess if you lose the court case, you hand it over, if you win the court case, they have to hand it over $$$$, or you shelve the .tel, but the question i want the answer to is, why did the t/m owner just not register there .tel???? it can't be money, its not easy to register a trademark, i'm loking in to doing one myself in the coming months. DC.
There is only a trademark infringement if you use the domain to traffic in the same type of goods as the trademark owner. The only way they can have a complete block on the name is like for a famous mark (which is really hard to get) but Nike would be a famous mark for instance. And any use of the work nike, even if it is outside of sports apparel and shoes would probably be infringement......however, less famous trademarks only have protection in their given classification of goods and services which they offer.
The lawyer is just being overly aggressive. Don't stress about it, and don't offer to sell it.
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